Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Darren Smyth, Nicola Searle, Eleonora Rosati, David Brophy, Alberto Bellan and Merpel, with contributions from Mark Schweizer. You're welcome to read, post comments and participate. You can email the Kats here

From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 31 August 2005

The IPKat has heard once again from his friend Michael Harman on the effects of IP protection in Iraq (see blog of 24 August). Michael writes:

Private Eye has picked up the story about the Iraqi Order 81, Rule 15 protecting plant varieties, with a reference to Michael Meacher’s Times article. Apparently campaign groups like Grain and Focus have added a Monsanto-approved statement that the new law applies only to new registered plant varieties, not traditional varieties. But the Eye says that there are virtually no stocks of traditional seeds in Iraq following the war and looting, so US giants can offer their "patented, no re-use, cheap-this-time, pay a fortune … seeds" when all the traditional seeds have gone.

What isn’t clear to me is whether the new Iraqi law extends the normal deadlines for protecting patentable inventions (eg the "terminator" gene) and plant varieties. I also wonder when patent and plant variety infringement proceedings in the Iraqi courts, and effective recovery of damages, is likely to be feasible.

The IPKat isn't a fan of no-reuse seeds at the best of times, let alone in this context.

The UK Patent Office has released its facts and figures for the previous year. More details will follow, but first a little sport – the IPKat wants his readers to guess which companies filed the most: (1) patents; (2) trade marks and (3) designs in the UK during 2004. The answer will be posted at 2pm tomorrow. In the meantime, no cheating!

The IPKat has learned from his friend Nader Qumsieh (NJQ & Associates, Amman) that the Iraqi Trade Mark Office reopens tomorrow. The Office has been closed since May to allow for the transfer of files. If you need further information, contact Nader here.

Sophisticated readers may never have problems with this title but one half of the IPKat, who reads things quickly and often inaccurately, tends to confuse the title with New Yorker magazine (which he very much enjoys). He wonders if he is the only one who makes this mistake, adding that it's only the title that confuses him: even a "moron in a hurry" would fail to confuse the magazines themselves.

3 Another easily-made mistake

Imagine the same half of the IPKat's surprise when he received an email announcing that his friends Ilora Choudhury and Emma Walton were going on a sponsored run to raise money for the Internet Corporation For Assigned Names and Numbers, ICANN. Once again it was a case of swift but inaccurate reading. The 5K run turns out to be for not ICANN but I CAN, a UK-registered charity that helps children with speech and communication difficulties.

Merpel says, ICANN's for adults with communication difficulties: they have some problems with people whose disability consists of adding the word "sucks" to some of the world's better-known brand names.

Tuesday, 30 August 2005

The UK Patent Office is seeking views in (yet another) public consultation. This time the subject-matter is whether the UK should retain its own patent classification key (the list of codes which identify the type of technology which is the subject of patent applications). The continuing need for the UK’s key has been called into question since the European Patent Office has its own key and there is an internationally recognised system under the PCT.

The Patent Office has identified 3 possible outcomes:

Continue to use the UKC key as at present

Freeze the key and continue to apply the frozen UKC terms to all published UK patent specifications

Abandon the UKC key and no longer apply UKC terms to published patent specifications

The IPKat can’t see why the UK needs its own way of coding patent applications in this situation. He also wonders who has time to respond to the glut of public consultations that the Patent Office has engaged in this summer.

The ECJ returns from its summer holidays next week. Amongst the gems to be heard by the suntanned judges are:

The Advocate General’s opinion in Ruiz-Picasso v OHIM (PICASSO/PICARO) on Thursday. This concerns the way in which terms with a well-known meaning should be treated in confusion-based opposition cases. The IPKat feels that the CFI made a special case for the names of historical personalities in this case and wonder if the Advocate General will do the same.

The ECJ’s judgment in BioID v OHIM, also on Thursday, concerning the registrability of the term BioID is a specific typeface and with an ®.

Also, lots of CFI hearing and decisions due. One that has really caught the IPKat’s eye is the hearing in Royal County of Berkshire Polo Club v OHIM - Polo/Lauren, an opposition concerning the registrability of the term ROYAL COUNTY OF BERKSHIRE POLO CLUB on Thursday 15 September.

The IPKat is very happy to be reading Intellectual Property in Designs, a brand-new book written by John Sykes, who heads the Commercial Law Group at Lupton Fawcett. Published by Butterworths this month at £145, it weighs in at xliii and 416 pages. Refreshingly, it's not all clogged up with appendices consisting of statutes, treaties and other stuff you can get for nothing on the internet. The text is lean, mean and pretty up-to-date (there's even an analysis of Peter Prescott QC's decision in Animal v Oakley, now happily on its way to Luxembourg).

The first 300-odd pages deal with design law as it affects the UK in its capacity as a fully-fledged but quirkily autonomous member of the European Union. The rest touches on design law in six significant jurisdictions: Australia, China, Italy, Japan, Germany and the United States [why specifically these countries, the IPKat wonders? If Italy, then why not the chaotic mess that is France - which recorded more than twice as many design registrations as Japan in 2002?]. The US chapter is particularly useful, since the protection provided by design patents in that jurisdiction is so very different to the way things are done in Europe. The IPKat is not aware of any clamour in the States for the introduction of EU-style protection and wonders which of the two works better in practice - especially for small and medium-sized businesses.There is also a Forward from Judge Michael Fysh QC (a former pupil of design law proto-guru Alan Russell-Clarke), which cunningly combines a selection of brief reminiscences and observations with plugs for cheap litigation at the Patents County Court and speedy results using the not-so-new Streamlined Procedure.

Left: How the Leopard Got Its Designer Spots ...

The most photocopied bit of this book will be the chart on page 28, which maps the various transitional arrangements that have been necessitated by the shifting sands of domestic and European legislative amendment. Another strong point is the book's explanation of how the current law actually arrived at its present state. Although not quite as much fun as Rudyard Kipling's "Just So" stories, John Sykes' account of "How UK Design Law Came to Have So Many Intricate Details" (not that he calls it that) is just as thrilling in its own way. This is a useful and well-crafted book which the IPKat is already coming to appreciate.2 Million-dollar patent

The IPKat found this item, together with a couple of fascinating links, on the excellent US Patently-O patent law blog. The bottom line is this: if your patent has 10,000 claims, the USPTO will charge you dearly for filing it. Merpel says, by the time the person skilled in the art had read all 10,000 of them, the patent term would probably have expired...

3 Our thoughts ...

... are with our IP colleagues in New Orleans and everywhere else that has been affected by Hurricane Katrina. That city has been a warm host (in more ways than one) to the International Trademark Association's annual meeting and the IPKat hopes that it will speedily return to normal. Meanwhile, a search of the USPTO website this morning revealed that no-one has yet applied to register HURRICANE KATRINA as a trade mark. Given the huge degree of consumer recognition that name will start out with, this looks like a golden opportunity going missing for some zappy entrepreneur.

Monday, 29 August 2005

The IPKat is thrilled to learn of India's first integrated Intellectual Property Rights Office, inaugurated today by Commerce Minister Kamal Nath (right). The US$28 million building marks the completion of India's project for modernisation and strengthening of IPR and patent offices, Kamal Nath said at the event:

"The facilities provided here are state-of-the-art and comparable to the best in the world. Not only patents, but also trade marks, copyrights and geographical indications are housed here. This modern integrated building complex fulfils a long-felt need. From dingy, old, scattered premises a few years ago, we have now graduated to this modern integrated complex".

The growing importance of intellectual property is seen in a four-fold rise in patent application filings in India in the past five years - from 5,000 in 1999-2000 to 17,000 in 2004. In the last two years India has issued 200,000 trade mark certificates, while another 100,000 certificates expected to be issued during the current year.The IPKat is relieved that Kamal Nath added a significant proviso: India's intellectual property officers must now ensure delivery of services in an equally efficient and transparent manner, befitting the working environment. It doesn't matter how fancy the building is if the staff aren't well enough trained to tackle the tasks before them. As it is, India's IPR Office looks better able to handle the growing IP burden than the country's court system. Merpel comments, if India can't get the staff, she can always outsource the work to the UK ...

Chart Attack reports that Slash and Duff McKagan, former members of Guns ‘n’ Roses, have sued their former bandleader, Axl Rose. Slash and Duff are accusing Mr Rose of diverting royalties from publishing rights from the band’s songs to a company he owns. Axl Rose’s lawyers (via Businesswire) have attributed the misdistribution of royalties to a clerical error by ASCAP (the entity that collects money for US songwriters).

Sunday, 28 August 2005

The IPKat has read on The Register about the steps taken at the University of Washington to bring Napster to the students who live at its halls of residence. The University’s Director of Client Services and Learning Technologies for Computing & Communications has expressed his regret that a standard free market in online music services couldn’t operate in this situation. However, he points to the fact that file-sharing by students has been turned into a major legal issue with individual students being sued and universities standing as the middlemen between student-users and copyright owners.

Yes - we know the formats aren't open and lock people in to paying subscription fees if they want to retain access to their music. It's very important to universities that the recorded record of human history remain accessible to students, teachers, and researchers - and remain accessible for the long run…And yes - we know Napster doesn't work with Macs and iPods. We continue to try to talk to Apple and others about what kind of service they might offer to university students. And don't think that Napster and the others wouldn't love to have their services work on Macs and iPods, if Apple would open up its DRM schemas.The IPKat thinks that it’s right that universities should police their computer systems (within reason) but he’s not sure that locking students into a single legal file-sharing programme is the way to go.

The IPKat apologises for the somewhat strange and spasmodic nature of its blogs over the past few days. The Blogger software was playing up (the problem has since been rectified).

2 Incorporate the cow and let it keep its milk

The IPKat has learned from the National Journal's Technology Daily that the National Academy of Public Administration (NAPA) is to propose that the United States Patent and Trademark Office be turned into a government corporation headed by a CEO with strong business experience. The USPTO's incorporation is seen as the best way to improve its performance:

"As a self-sustaining federal entity that performs a direct service for fee-paying customers, [the USPTO] needs to be able to function like a business and report to Congress and the administration with a bottom-line set of financial statements".

A similar proposal, made in 1997, was defeated by small inventors when it was attached to a larger Bill they did not support.

"We believe that allowing the PTO to function as a government corporation would greatly enhance the ability of the office to retain fee revenues to process their work".

Historically, PTO has had to remit to federal coffers all of the fees it collects from patent applications. Congress has redirected much of that money to other agencies even as the backlog in processing applications has grown. The NAPA report endorses the end to such fee diversion. The PTO

"needs to continue to have access to the fees it collects without fiscal-year limitation so that it may achieve efficiencies with steady stream funding and improve its ability to hire and retain the ... workers critical to its mission".

Turnover among patent examiners is high. Most leave the agency within three to five years. With such high attrition, seasoned examiners must be pulled off cases to train new workers. A bill to let the agency keep its fees - which amounted to about $800 million over the last 12 years - was introduced earlier this year. The future of this measure (HR 2791) is however in doubt because appropriators are unwilling to forgo their revenue stream.

The IPKat is delighted at the thought that the USPTO may have a little more opportunity to shape its own destiny, which retention of its income would facilitate. He also looks forward to the day when there will be an "elite" corps of big-name patent examiners who earn the sort of salaries that their skills and judgment should command. This, more than anything else, will make patent examination a positive career choice rather than a 'third-best' option for people who can't get anything better. Merpel says, "but surely an examiner is only as good as the Office's examination manual lets him be ..."

3 US Copyright Office not so friendly to alien browsersA news item in The Register reports that the US Copyright Office wants to limit the number of browsers that can submit online forms to its site. The agency has proposed that, temporarily at least, it will accept copyright claims via forms submitted from only Microsoft Internet Explorer or Netscape browsers. The World Wide Web Consortium (W3C) has objected, writing to say:

"The proposed system would be contrary to at least the spirit of federal information policy adopted by the E-Government Act of 2002".

This is bad news for at least one of the IPKat's co-blogmeisters (Jeremy), who generally browses via his much beloved Crazy Browser. Merpel says, I didn't realise Netscape was still around ...

Friday, 26 August 2005

The IPKat has read in Ananova about 16 year-old Peter Ash, of Lawford, Somerset, who has attached a generator to the exercise wheel of Elvis the hamster and then connected it to his phone charger. Elvis does the legwork while Peter charges his phone in an economically and environmentally friendly way. He came up with the idea after his sister Sarah complained that Elvis was keeping her awake at night by playing for hours on his exercise wheel. Said Ash:

"I thought the wheel could be made to do something useful so I connected a system of gears and a turbine. Every two minutes Elvis spends on his wheel gives me about thirty minutes talk time on my phone".

The IPKat is really impressed. What a wonderful invention, says the IPKat! Almost free energy and you can eat the hamster when it gets too old and tired to keep running ...

BoingBoing reports that the Electronic Frontier Foundation is calling for techie-types with an interest in civil liberties to join its listserv. According to the EFF site, the list works like this: attorneys needing technical assistance on cases will contact us and let us know what kind of help they need and whether they can pay. After we receive the request and determine if it is appropriate for our list, we'll post a note to the list with a basic description of the project (for example: "CA attorney needs a tech familiar with Microsoft Exchange servers to assist in recovering allegedly deleted email messages needed for lawsuit. Can pay reduced fee").

If you're on the list and are qualified and interested, you contact us, and we'll connect you to the attorney. That's it. EFF won't investigate or vouch for either side -- we don't have those kinds of resources. We'll simply provide the connection.

The IPKat says that this sounds like a worthy scheme and wishes the listserv success.

The WIPO Standing Committee on Copyright and Related Rights is considering a potential new treaty on the rights of broadcasting organisations. The next session of the Committee (expected in November) will discuss the Chairman’s consolidated version of the text of the treaty.

An statutory instrument can be expected this autumn, implementing the artist’s right to a share of the proceeds from any resale of his work into UK law. The IPKat comments that the burning question of “What is art?” is going to become even more important for lawyers.

The Patent Office is commissioning research concerning whether the term of protection for some works, specifically sound recordings, is correct, although any changes would have to be agreed by all EU Member States.

The IPKat says that this should provide plenty of excitement this autumn.

A group from the full time MBA course at the Tanaka Business School, Imperial College London are conducting a consulting project with the Intellectual Property Institute (IPI), the London-based UK IP thinktank. The aim of this project is to explore fund raising opportunities and develop a business plan to help the IPI to create the higher level of core and research funding for it to meet the needs and expectations of its stakeholders. As part of the research, the group is conducting an online survey in order to find out who the IPI’s clients are and whether they are satisfied with what they’re getting.

Interested parties can participate in the survey (which is 10 questions long and isn’t too taxing) by following this link.

Thursday, 25 August 2005

Earlier this week the IPKat said that John Lambert was the first barrister in the UK to author an IP blog. Turns out the IPKat was wrong by just over a month. He has been informed about the Geeklawyer blog, which is written by an employed barrister. The site mostly follow a digital libertarian agenda and will often investigate concerns about the abuses of IP law by governments and corporations, but from a pro-IP perspective. This blogmeister also writes a site named Geeklawyer.org, aimed mostly at geeks interested in IT and IP.

The IPKat took great delight in reading in yesterday's Telegraph about a wonderful sting operation in which dozens of suspected gangsters, many of them from China, arrived for a wedding in New Jersey only to discover that the bride and groom were FBI agents and that they were under arrest.

Gold-embossed invitations had promised guests free hotel rooms and transport to a reception on a yacht called Royal Charm in Atlantic City harbour. Complimentary limousines were waiting - but only to take the guests, in all their wedding finery, to holding cells. Those held have been charged with smuggling vast quantities of arms, counterfeit Viagra, ecstasy and forged dollar bills into America.

FBI agents on a fake VIAGRA raid - they have a shoot-to-pill policy

The undercover FBI agents, who posed as business partners keen on distributing smuggled goods, had spent years cultivating Asian-based mobsters. The "couple" decided that a lavish wedding was the best way to lure the smugglers into the US.

The IPKat is delighted to see that so elegant a means was found for ensnaring the villains. Merpel says, "It's not fair, I never even got an invitation ..."

August may be a quiet month for the rest of the world, but for legal bloggers in the UK it seems that it’s boom-time. On Tuesday the IPKat wrote about the first IP blog by a UK law firm. Well, now he has found the first IP blog by a UK barrister. John Lambert, head of chambers at Northern Intellectual Property Chambers, Huddersfield, writes NICPLAW. The blog so far has posts on patents, copyright, trade marks and competition law – and it only started on Monday!

Wednesday, 24 August 2005

You may be interested in an article in The Times (12 August, page 19) by Michael Meacher (right), "My sadness at the privatisation of Iraq". Its main thrust is indicated by its subtitle "the US transnational companies are taking over - and they'll benefit for years to come". It is concerned with the orders enacted by the US proconsul, Paul Bremer (below, left), chief of the occupation authority. There several paragraphs refer to IP, the first of which reads:

"But what is remarkable about these laws is not only their overall degree of control but their far-reaching application. Order 81, for example, has the status of binding law over 'patent, industrial design, undisclosed information, integrated circuits and plant variety' - a degree of detailed supervision normally associated with a Soviet command-and-control economy".

I find this slightly surprising. I'm not sure which Treaties are involved, but there are very few countries which have not joined the PCT and I think that most countries have signed up to TRIPs, which probably covers most of the items listed. The US, which surely subscribes to most if not all of the items, would surely be surprised to learn that it is a Soviet-style command-and-control economy. I never took a great deal of interest in the USSR system, but my impression is that they tolerated rather than approved of patents; I do not know how far they also subscribed to the various other systems for protecting designs, integrated circuits, plant varieties, and so on. I think it is also arguable that the previous Iraqi economy had certain command-and-control aspects, whether or not Soviet-style. And I find it surprising that what Meacher acknowedges to be privatisation leads to a Soviet-style command-and-control economy. The article continues:

"While historically the Iraqi constitution prohibited private ownership of biological resources, the new US-imposed patent law introduces a system of monopoly rights over seeds. This is virtually a take-over of Iraqi agriculture.

The rights granted to US plant breeding companies under this order include the exclusive right to produce, reproduce, sell, export, import and store the plant varieties covered by intellectual property right for the next 20-25 years. During this extended period nobody can plant or otherwise use plants, trees or vines without compensating the breeder.In the name of agricultural reconstruction this new law deprives Iraqi farmers of their inherent right, exercised for the past 10,000 years in the fertile Mesopotamian arc, to save and replant seeds. It enables the penetration of Iraqi agriculture by Monsanto, Syngenta, Bayer, Dow Chemical and other corporate giants that control the global seed trade. Food sovereignty for the Iraqi people has therefore already been made near-impossible by these new regulations."

I suspect that there may be some casual readers who will read the last few sentences and not realize that they apply only to new varieties (leaving all existing varieties free) and presumably also only to varieties which are actually registered in Iraq under the new law.

Michael Harman comments: "It is usually gratifying to find politicians taking an interest in IP matters, but in this case I think it is a mixed blessing".

The IPKat agrees, but he is not surprised. In this era of information overload, politicians rarely read beyond the press releases of lobby groups and commit their intellectual resources to a genuine understanding of intellectual property issues. It is incumbent on this blog, and indeed on all of us as IP enthusiasts, to ensure that information about IP is clear, accessible and well-informed. Also, since individual bias and self-interest can never be eradicated, we should at least nail our colours to the mast and say who we are, and what out interest is, when explaining IP to others. If it is true that a rising tide raises all boats, then the gentle rise in the public's knowledge of IP issues will benefit even those who purport to represent them in Parliament and beyond.

The IPKat stumbled across this absorbing piece in the Washington Post. It seems that US Patent and Trademark Office records allow nearly unlimited access to the Social Security numbers, credit card numbers and bank account numbers of hundreds of inventors who petition to reclaim their patent rights each year. Inventors who are late to file maintenance fees due after four, eight and 12 years of patent ownership must explain the delay and show why they should be allowed to keep their patent rights. More than 1,000 inventors petition to reclaim their patent rights each year.

Inventors typically provide documentary evidence to prove that hardship prevented them from paying their maintenance fees (ranging from $450 for independent inventors to $3,800 for large companies) on time. These records, which are not legally required, include divorce decrees, tax returns, records of psychological therapy, professional licence suspensions, hospital bills, credit reports, telephone numbers and home addresses. Said the wife of one inventor:

"Why would they need all of that information? If you have a patent, the patent is to get the product to the general public. Why does the public need to know what we eat and breathe? I think it's an invasion of the most intimate of privacy".

USPTO officials acknowledge the risk of identity theft, although they are not aware of any specific instances, and said they are trying to find a solution. On 10 August they posted a warning on the agency's website while they search for a better way to protect inventors.An embarrassed IPKat confesses that, though he's sure the USPTO Advisory is there, he couldn't find it (but why, he asks, is the Patents home page on the USPTO webbie so horribly crowded? Hot tip to the USPTO: see how it's done in the UK , nice and uncluttered). Merpel adds, stop this obsession with form over content!! American inventors are exposing their private details to the world and all you can talk of is web-page layout. The IPKat ripostes, if an inventor can't find the warning that's on the website then it may as well not be there.

Divide and rule: a good way of exploiting UK trade marks, or a minefield?

IPKat co-blogmeister Jeremy is doing some research on territorially limited trade marks in the light of section 24(2) of the United Kingdom's Trade Marks Act 1994 which provides for the partial assignment of a registered mark in relation to, among other things, the use of the mark in a particular locality.

"Partial assignments (also called “split marks”) are not policed by the registrar; it is the responsibility of proprietors to ensure they avoid confusion or deception in the marketplace, and so putting their marks at risk of revocation action.Once a mark is split, each part becomes a registration in its own right, identified by a single-letter suffix, and must be separately renewed".

The IPKat - who hasn't ever come across a local assignment of a nationally registered trade mark - thinks a little strange that if, say, he obtains registration in the UK of the word mark BONGO for blodgets, he can divide the UK up into little packages and assign the BONGO separately to assignees in Scotland and Wales or, more extremely, in Bristol and Birmingham. The map (right) offers some attractive suggestions as to how a UK trade mark might be zonally registered. Jeremy has already made a list of six interesting legal and commercial problems that can result from local assignments and hopes to add to them The results of his research will be posted on the blog in due course.

If anyone has any useful information, experience or thoughts on the subject, can he please email Jeremy and let him know?

The IPKat has been provided with a copy of the Patents County Court’s recent design decision in Woodhouse v Aquilla and Urbis by both Michael Edenborough and Richard Davis, both of Hogarth Chambers.

Woodhouse commissioned Creactive and LDL to design a range of street furniture that became known as the Geo range. Creactive designed the Geo lantern (street light) which was the subject of the design infringement case. LDL designed the rest of the range. However, LDL applied for the registered designs for the whole range, including the lantern in its own name, giving simplicity and convenience as its reason for adopting this course of action. The application took place before the new registered design regime came in in 2001.

Aquilla produced its own lantern named the Polo. Woodhouse claimed that the Polo infringed its Geo design. Aquilla countered that (i) the registered design was invalid since it had been applied for by LDL, a person who was not the proprietor of the design right in the Geo lantern and (ii) in any case the Polo lamp did not infringe the registered design of the Geo lamp.

The validity of the registered design

*A bona fide claim to be the proprietor of a design right is insufficient to ensure its validity. Instead, the test is objective – the applicant must be rightfully claiming to be the proprietor of the design.*Although LDL had purported to assign the design to Woodhouse in 2002, this assignment was not effective because LDL was not the proprietor of the design and so could not transfer ownership of it.*At the time of LDL’s application, Woodhouse did not even have an equitable interest in the design since it did not pay for the work until a month after the application. It was the contractual conditions at the time of that payment that transferred the interest in the design from Creative to Woodhouse.*Aquilla was a “person aggreived” by the registration, even though it was not the rightful proprietor of the registered design.*The correct course of action was for the registered design for the Geo lantern to be cancelled.

Registered design infringement

Although the registered design was invalid, Judge Fysh considered the question of infringement in case he was found to be wrong on the question of validity on appeal.

The correct law

Although the design was registered under the “old law”, the acts of infringement occurred after 9 December 2001 and so were governed by the New Act.

The informed user

Registered design infringement under the New Law is judged according to the impression that the designs make on the “informed user”. There was no authority on the qualities of this individual, however…

*The informed user must be a regular user of articles of the sort which is the subject of the registered design. He may be a consumer or user, but is not a manufacturer of such goods or the average man in the street.

*“Informed” imports the suggestion that the user is familiar with what is, or has in the recent past been, in the market.

*Since this was a design law matter, eye appeal, rather than familiarity with the underlying technology is what’s relevant. An analogy with the “man skilled in the art” who inhabits patent law would not be helpful.

*In this case the informed user was a regular member of an urban development who is mostly interested in the way street furniture looks, but may have a basic understanding of the product’s technical features and cost.

*The comparison of designs had to be made as if the lanterns were in situ located 8-10 meters above grounds level, even though the lanterns would be shown to the reasonable user at ground level when he was deciding whether to purchase them.

Which parts of the design were relevant to the comparison?

*While the lantern, and not the bracket, was the most important functional, visual and aesthetic feature of the design, the bracket could not be ignored in the comparison. However, it was appropriate to conclude that the informed user would pay somewhat more attention to the appearance of the lantern than the bracket, particularly because the brackets were often supplied separately and it was the lantern element that was really what was strikingly different from previous designs.

*Were it to be the case that the registered design covered the lantern alone, it would be surprising if no infringement was found, considering that Aquilla had admitted unregistered design right infringement with respect to the lantern. However, the registered design right did not cover the lantern alone.

Was there infringement?

*The difference between the brackets as featured in a brochure for the Polo design and the Geo brackets removed the Polo lanterns featured from the scope of the design.

*The sale of the Polo lantern alone did not infringe. Therefore, installations of the Polo lantern, but not the bracket, in Bradford and Winchester did not infringe.

*Placing multiple lantern/bracket combinations at the same height on the same pole could be regarded as multiple single units conjoined and as a result, the multiplicity of the units had no effect on the issue of infringement.

*Of the other Polo combinations including brackets put before the court, only one installed at Bradford infringed, since only this combination had substantially horizontal arms with visible gussets beneath the horizontal arm.

The IPKat says, it’s common sense, but if you’re commissioning someone to design something for you, don’t get your other contractors to apply for the design registration for you. Also, it’s best to get things sorted out from the outset and to make it clear when you employ someone to create something in which IP rights may vest who will own those rights. Merpel says, if you have a visible gusset beneath your arm you’re in serious trouble.

Tuesday, 23 August 2005

1 EEK! it's another ECCThe most recent issue of Sweet & Maxwell's bimonthly law report series, the European Commercial Cases, contains another delightful sprinkling of intellectual property cases. Apart from the marathon decision of Pumfrey J in Navitaire v easyJet and BulletProof on software copyright and database right infringement there are also two French copyright cases, lovingly translated into English:

* France 2 SA v Fabris, in which the Cour de Cassation upheld the decision of the Cour d'appel de Paris that there was no "fair use" defence that justified the broadcasting of stills of Maurice Utrillo's paintings when broadcasting news of an exhibition at which they were displayed;* Hotel de Girancourt v SCIR Normandie, another Cour de Cassation decision in which that court affirmed that the owner of an item (in this case the frontage of a historic building) had no exclusive right to control the taking of photographs of it.

2 Petit pointThe IPKat's friend and fellow blogger (here and here) C. E. Petit must have had the needle to the Kat's Sunday blog ("A duty of Carey") because he has taken it to task:

"I'm afraid you just weren't adventurous enough on the "exam question". [He then adds the following questions ...]

(ix) If Eminem behaves identically at a show in Manchester, may Carey sue in a UK court? Under UK law?

(x) For purposes of this question only, assume that Carey was a British citizen and that the calls were placed from London to Eminem in the US.

Which court(s) have jurisdiction? If UK courts have jurisdiction, which law may or must they use? If US courts have jurisdiction, which law may or must they use?

Answer each subpart under UK law, US (California) law, and US (Michigan) law.

(xii) Describe the proper remedies that Ms Carey may claim under US law.Although inventive alternatives, such as forcing Eminem to listen non-stop to Celine Dion recordings for thirty days straight, might be more "just", restrict yourself to remedies available under intellectual property law.

Part 9 of the UK's Enterprise Act 2002 governs the release of information by public authorities. Today the Department of Trade and Industry published a consultation document relating to proposed amendments. At present, public authorities cannot release information (for example product test results and company addresses) for the purpose of private civil proceedings.Consumer groups and intellectual property rights holders have both voiced concerns that public authorities are unable to release this information to consumers who have been injured by an unsafe products, or to businesses whose IP rights have been infringed and who wish to take action against rogue traders in the Civil Courts.

The Government's options include the following:

* keep the law unchanged and do nothing;

* amend Part 9 to allow the release of information for the purpose of private civil proceedings only in certain deserving cases or

* amend Part 9 to allow the release of information for the purposes of private civil proceedings in all cases.

The closing date for making your comments is Friday 18 November 2005.

Full text of consultation document hereMore on the Enterprise Act hereStarship Enterprise hereHow the government can make its mind up here, here and here

The IPKat has come across a new IP/IT blog. Naked Law is written by 6 members of Cambridge law firm Mills & Reeve’s Technology Team. It focuses on IT, IP, privacy and data protection, e-commerce and distance selling, and e-government.

So far as the IPKat knows, this is the first law blog to be written by a UK law firm (though he’s happy to be corrected on this one). Is this the beginning of a trend he wonders…

General Cigars was the proprietor of the mark CIFUENTES WINKS which it applied for in 1991 under the Trade Marks Act 1938. However, General Cigars had to disclaim the CIFUENTES element of the mark since the Registry’s practice at the time was not to grant trade marks in respect of foreign surnames in the absence of proof of acquired distinctiveness (CIFUENTES appeared in a number of instances in the Madrid telephone directory). General Cigar’s mark was finally registered in 1994. Partagas applied to register CIFUENTES as a trade mark for the same goods in 1995. General Cigars opposed Partagas’ application. Partagas countered that the opposition had to be rejected because the only element that the two marks had in common, the term CIFUENTES, had been disclaimed by General Cigars. Under the transitional provisions concerning the introduction of the Trade Marks Act 1994, pre-existing disclaimers had to be treated as if they had been entered on the Register under the 1994 regime. Under the 1938 Act, an infringement action could not succeed where the only similarity between the two marks was based on the disclaimed element of the earlier mark but this was not the case in opposition proceedings. In actions before the Registry, disclaimed elements could not be ignored. The question to be answered in this case was whether the same approach applied under the 1994 Act, or if instead disclaimers had to be taken into account in the context of both oppositions to registration and infringement actions. A further complication arose from the fact that the Registry had altered its policy on foreign surnames, abandoning the rule that such names were automatically to be considered lacking in inherent distinctiveness, and so it was possible that the disclaimer was subject to being removed.

* All parties accepted that the disclaimed matter can be relied upon when there is a possible conflict between the later mark and both disclaimed and non-disclaimed elements of the earlier mark. The issue arose over the situation in which the only overlap is between the later mark and a disclaimed element of the earlier mark.

* There was no evidence from Parliamentary materials that the position under the 1938 Act with regard to disclaimers was meant to be retained under the 1994 Act.

* The practice on the Community trade mark was neither helpful to General Cigar nor relevant. The only decision on point was the Board of Appeal’s decision in FURSTENBERG, but this decision on likelihood of confusion under Art.8 of the CTM Regulation could have no bearing on s.13 of the 1994 UK Act.

* It was difficult to imagine that Parliament could have intended for a disclaimer to be taken into account for infringement purposes but not for opposition and invalidity purposes since one of the uses for s.5 is to pre-empt the need for infringement actions by preventing the registration of marks that, if used, would infringe.

* General Cigar’s suggested distinction between the effect of a disclaimer on registration matters and on infringement issues was based upon a false premise since in both types of situations a disclaimer operates to affect the scope of protection by influencing the analysis of the likelihood of confusion. Because this concept was common to both s.10 and s.5, it applied equally to both scenarios.

* It was conceded that any distinction between registration and infringement issues did not apply to territorial limitations. Since both territorial limitations and disclaimers were to be found in the same section, s.13, of the 1994 Act, any argument that sought to make a distinction based on the context of the part of the 1994 Act in which s.13 occurred was flawed.

* As a result of this reasoning, no parallel could be drawn between the 1994 Act and the sections of the 1938 Act that led to the effect of disclaimers being limited to infringement actions. Thus the Hearing Officer in the PACO decision was correct, even if some criticisms could be made of his reasoning.

* There was an element of unfairness in the result because the Registrar had altered his practice with regard to the registration of surnames, and so there was the possibility that the disclaimer of CIFUENTES had only been necessary under an outdated approach to the registration of surnames. It was therefore arguable that the correct approach in this case was to stay the case in order to enable General Cigar to apply to have the disclaimer removed under s.64(5) of 1938 Act, which provides that the Registrar may remove from the register matter that appears to him to have ceased to have effect. This was a matter for further argument if General Cigar wanted to make such an application.

The IPKat notes that while this case concerned the position under the transitional provisions, the same approach to disclaimers should apply to marks applied for and granted under the 1994 Act.

Monday, 22 August 2005

The Daily Telegraphreports this morning on the activities of the French customs authorities, who are pulling motorists in as they cross the border from Italy and fining them on the spot if they do not immediately yield the counterfeit products they've bought in the popular street market in Ventimiglia. The article specifically cites seizure of HERMES and LOUIS VUITTON fakes. It quotes Christine Laï, the director-general of the manufacturers' association Unifab:

"The genuine item would have cost 100 times as much. Not many people go to the Ventimiglia market intending to bring back fine Italian charcuterie. They know what they're doing. The problem of counterfeit goods is enormous. Every other French business is a victim, whatever they make, from designer clothes to Champagne, and globally we are talking about $400-500 billion a year".

Indeed, French customs chiefs are reported as saying that the number of articles seized rocketed from under two million in 2003 to nearly 3,500,000 in 2004. China - including Hong Kong - South Korea, Thailand and Vietnam account for 72 per cent of those confiscated in France.The IPKat would love to know what criteria the customs officers employ for determining whether goods are genuine or fake, knowing how difficult he sometimes finds it to tell them apart. Is is it just obviously unused goods with labels showing knockdown prices? Or failure to display a receipt from a recognised retailer? Or what? Merpel admires the French for their strong support of IP owners but wonders: is it just French brands that are protected, or does the benefit of this procedure apply to English, German, Dutch, American and other brands?

Left: more French steps to repel unwanted fakes

2 Latest IPQ

Issue 3 of Sweet & Maxwell's Intellectual Property Quarterly for 2005 is now out. As ever, it contains plenty to think about. In this issue there's

* "Music and Creativity as Perceived by Copyright Law", by Andreas Rahmatian. Beware: this man has a first degree in Musicology and History from the University of Vienna, so you'd better brush up your Beethoven before attempting this one;

* The published version of a conference paper given in January 2004 by the IPKat's co-blogmeisters on "Going Down in History: Does History Have Anything to Offer Today's Intellectual Property Lawyer?";

* " 'Policy Style' Reasoning at the Indian Patent Office" by Oxford Intellectual Property Research Centre-based Shamnad Basheer, looking at the point at which law and politics meet in the wake of India's recent major legislative amendments of the patent system.

3 The glittering prizes

The Australian Copyright Council has announced the GC O'Donnell essay prize of $3,500 (that's Australian dollars) for the author of an essay displaying

"original thinking on a topic of the author’s choice regarding copyright and the protection of the interests of authors."

The competition is open to any interested persons, including authors, lawyers and students. Essays must be submitted by 14 October. Get writing now - and good luck!

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